Types of Patents
Various types of patent applications can be filed in India, including:
Provisional Patent Application
Complete Patent Application
PCT International Phase Patent Application
PCT National Phase Patent Application
Paris Convention Patent Application
Indian Patent Office follows a well-defined patent prosecution procedure, which includes various deadlines and other documentary requirements. In general, such deadlines mostly begin from the priority date of the patent application.
Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier.
However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.
Patent Examination
After filing a patent in India, a separate request for patent examination via Form 18 is required to be filed with Indian Patent Office. This request can be filed either at the time of filing patent application or anytime within 48 months from the earliest priority date.
Some patent applicants intend to delay patent prosecution process for business reasons as the claimed invention might need some time for being completely embodied as a commercially viable product. Hence, such applicants can take advantage of the 48 months timeline and file the patent examination request after few months / years of the patent filing date.
Alternatively, some patent applicants prefer to expedite the patent examination process by filing such examination request along with the patent application. This combined with a request for early publication can reduce the patent prosecution time period by approx. 18 months.
First Examination Report (FER) or Office Action
The patent examiner examines the contents of patent application to determine novelty, inventive step (non-obviousness) and industrial application. Thereafter, the patent office issues a set of objections generally known as the first examination report (FER) or the office action.
Office Action Response
The patent applicant is required to submit a response to office action (FER) within 12 months of issuance of said office action.
Grant of Patent
After receiving a satisfactory response from the applicant, the examiner grants the patent. In some cases, a hearing may be required. In addition, the examiner can issue further office action after receiving response to FER, which can be responded to by the applicant in a timely manner to proceeds towards grant stage.
5. Provisional Patent Application
Define Scope of Invention
Broad Disclosure
Broad Set of Claims (Optional)
Patent Drawings / Sketches
Provides Patent Pending Status
6. Complete Patent Application
Direct filing or within 12 months of provisional
Full-fledged claims required
Formal Patent Drawings mandatory
Detailed description of best mode required
7. PCT International Phase Application
Treaty Signed
by 148+
States
Can be filed
directly
Or within 12
months of
priority date
Main Form to
be filled:
PCT/RO/101
Competent
Search
Authority to be
selected
9. PCT National Phase Application in India
Within 31
months from
Priority Date
Similar to
Filing
Regional
Patent in India
English
translation
required
Prosecution
begins after
31 months
from priority
Express
Examination
can expedite
proceedings
10. Convention Patent Application in India
India signatory to
Paris Convention
To be filed within 12
months from Priority
Date
English translation
required
Application treated
as Ordinary Patent
filed in India
12. Patent Prosecution in India
1. Patent
Filing
2. Patent
Publication
3. Patent
Examination
4. First
Examination
Report (FER)
5. Responding
to objections
6. Grant of
patent
13. Patent Prosecution in India
1. PATENT FILING IN INDIA
(Complete Patent, PCT
National Phase or Convention
Application)
2. PATENT PUBLICATION
(After 18 months of filing date
or within 6 weeks of filing
request for early publication
via Form 9)
14. Patent Prosecution in India
3. PATENT EXAMINATION
(Examiner determines Novelty,
Inventive step & Industrial
Application)
4. FIRST EXAMINATION
REPORT
(Examiner issues FER
containing set of objections)
15. Patent Prosecution in India
5. OFFICE ACTION
RESPONSE
(Applicant is required to
respond to FER within 12
months)
6. GRANT OF PATENT
(Examiner grants the patent
after receiving satisfactory
response / hearing)
Types of Patents
Various types of patent applications can be filed in India, including: Provisional Patent Application Complete Patent Application PCT International Phase Patent Application PCT National Phase Patent Application Paris Convention Patent Application
Generally, filing a provisional patent application forms the first step of patent process in India. A provisional patent in India can be filed by an inventor (individual or natural person), group of inventors, or a legal entity (company or a research organization). The applicant may or may not be an Indian national. There are multiple advantages of filing a provisional patent application
A complete patent application can be filed directly or within 12 months of filing a provisional patent. Drafting a complete patent application that is to be filed in India requires detailed disclosure of the invention, including abstract, claims, formal figures (patent drawings), brief description and detailed description of best mode of carrying out the invention.
PCT International Phase Applications are governed by Patent Cooperation Treaty, or PCT as it is commonly known, is signed by 148 jurisdictions (countries) worldwide. A PCT International Phase Application can be filed with the Indian Patent Office or directly with the International Bureau (IB) of WIPO.
Applicants can file PCT International Application directly or within 12 months from the earliest priority date. The main form required for PCT international application is RO/101. While drafting the PCT documents, applicants are required to select a competent international searching authority from: Austrian Patent Office (AT) Australian Patent Office (AU) State Intellectual Property Office of the People’s Republic of China (CN) European Patent Office (EP) Swedish Patent and Registration Office (SE) United States Patent and Trademark Office (US) Based on PCT documents and forms filed by the applicants, the selected search authority conducts a PCT International Search as per standards prescribed by WIPO. The search generally includes analysis of patent publications, granted patents and non-patent technical literature for determining patentability of the claimed invention. The patentability of patent claims is analysed by reviewing Novelty (N), Inventive Step (IS) and Industrial Applicability (IA). Along with the patentability analysis, the competent search authority issues a Written Opinion (WO), which forms the basis of IPRP (International Preliminary Report on Patentability).
Entering PCT National Phase in India is similar to filing a local patent application in India. The statutory timeline to file a PCT National Phase Application in India is within 31 months from the priority date. In accordance with Indian Patents Act and corresponding Patent Rules, the International Filing Date is deemed to be considered as filing date in India for PCT National Phase Patent Applications. Indian Patent Office (IPO) considers an application filed under PCT National Phase as a Convention Application filed under Paris Convention.
Filing Convention Patent Application in India: Foreign patent applicants can claim the benefit of Paris Convention and file patents in India by claiming priority from already filed international patent applications.
English translation of the patent application (as filed with WIPO) is required if international patent application is not filed in English language. Indian patent laws mandate that all formalities for PCT National Phase Applications filed in India are similar to an ordinary patent that is filed in India. Once a PCT National Phase Application is filed in India with the Indian Patent Office, the patent prosecution process doesn’t begin before the expiry of 31 months from the priority date. However, the patent applicants can fast track or expedite the patent process by filing a request for express examination, as explained here.
The main stages of patent application process in India before the Indian Patent Office: Patent Filing before Indian Patent Office Patent Publication Patent Examination Patent Opposition (if any) Replying to Patent Opposition Raised by Patent Examiner Indian Patent Grant Publication of Indian Patent Grant in the Indian Patent Office Journal
Once a patent application has been filed with Indian Patent Office, the next step is patent publication. Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier. However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.
Once a patent application has been filed with Indian Patent Office, the next step is patent publication. Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier. However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.
Once a patent application has been filed with Indian Patent Office, the next step is patent publication. Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier. However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.